District Court Holds That Certain Communications Between Defendant And Non-Party Distributor Were Protected By The Common Interest Doctrine, While Other Communications That Were Primarily Business-In-Nature Were Not
On January 14, 2020, the United States District Court for the Northern District of Illinois issued a ruling on a motion to compel documents withheld as being privileged, containing attorney work product, and subject to the common interest doctrine. Beijing Choice Elec. Tech. Co. v. Contec Med. Sys. USA, Inc., slip op. (N.D. Ill. Jan 14, 2020). The Court granted-in-part and denied-in-part the motion.
Attorney-client privilege is designed to protect a client’s confidential communications with an attorney for the purpose of seeking legal advice. The attorney work product doctrine is distinct from, and broader than, the attorney-client privilege; it is designed to protect the mental impressions, conclusions, opinions, or legal theories of a party’s attorney or other representative concerning the litigation, where the documents are primarily legal in nature.
In the normal course, disclosure to a third party waives any protection, unless such disclosure was pursuant to what is commonly known as the common interest doctrine. This doctrine extends protection of otherwise non-protected communications with third parties where the parties have a common legal interest and the communications are made in the course of an ongoing common enterprise and intended to further that enterprise. In the context of patent litigation, this doctrine is often relied upon by defendants who are sued over the same patents, or by parties in a customer/supplier relationship where the supplier’s products are accused of infringement.
In the instant suit, Beijing Choice sued Contec, alleging that Contec infringed patents directed to fingertip pulse oximeters. Shortly after filing suit, Beijing Choice sent cease-and-desist letters to several of Contec’s distributors, demanding that they cease and desist selling the allegedly infringing pulse oximeters. In response to receiving a letter, Veridian (one of Contec’s distributors) reached out to Contec via email for advice regarding the letter. Veridian and Contec then exchanged several more emails—all of which Contec withheld in the litigation as being protected by the attorney-client privilege, the attorney work product doctrine, and the common interest doctrine.
Beijing Choice moved to compel these communications.
With respect to several of the communications, the Court granted the motion. According to the Court, despite Contec’s assertion otherwise, the communications did not reveal the substance of a client confidence, nor did they contain “the mental impressions, conclusions, opinions, or legal theories” of Contec’s attorney. Instead, they primarily involved business discussions and thus were not protected.
With respect to one communication, the Court denied the motion, finding that the communication was primarily legal in nature because it contained a filtered summary of an attorney’s opinions regarding the lawsuit (implicating the attorney-client privilege) and was shared with Contec’s distributor (implicating the common interest doctrine).
This case serves as a reminder that not all communications among parties with aligned litigation interests are protected; rather, protection is limited to only those that are legal in nature.